DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) was filed after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 10/31/2025 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 10/31/2025 and 09/29/2025. The claims filed 10/31/2025 are examined on the merits.
Claims 36-55 are pending in the application. Claims 1-35 are previously cancelled. Claims 36, 39 and 51 are currently amended. Rest of claims are previously presented. Claims 36-55 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 36-55 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 36 is amened to recite a spherical capsule for single serving. The examiner does not find support for such a limitation. The examiner notes that page 2, line 17-20 of the instant specification recites a capsule for the portion-by-portion preparation of beverages. However, it does not appear that single serving and one portion preparation has the same scope, since the former appears to regulate the size but the latter does not.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 36 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-19 of copending Application No.17/919,817 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method as disclosed in claims 12-19 encompass cross-linking a coating of a compacted pellet of beverage powder via bond which has interaction between election pair donor (e.g., starch, cellulose, chitin, carrageenan, agar or alginate), and an electron pair acceptor (e.g., metal), thus forming a coating that is water insoluble.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 36 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 16-32 of copending Application No. 17/827,532 in view of Grykiewicz US Patent No. 5,287,797 A1 (hereinafter referred to as Grykiewicz). The method as disclosed in claims 14 and 16-32 encompass cross-linking a coating of a beverage powder via bond which has interaction between election pair donor (e.g., polysaccharide), and an electron pair acceptor (e.g., metal). As for the feature that the beverage power is provided as a compacted pellet, Grykiewicz teaches that loose ground coffee is compressed to make a compacted pellet (e.g., tablet or wafter of compressed coffee) for easy handling and storage (column 1, line 41-46). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the reference application by providing the beverage powder in a compacted pellet form for the aforementioned advantage.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 36-55 are rejected under 35 U.S.C. 103 as being unpatentable over Grykiewicz US Patent No. 5,287,797 A1 (hereinafter referred to as Grykiewicz) in view of Robinson US Patent Application Publication No. 2013/0177672 A1 (cited in the IDS filed 02/23/2023, hereinafter referred to as Robinson), Girard US Patent Application Publication No. 2013/0029012 A1 (hereinafter referred to as Girard), Earle and McKee US Patent No. 4,504,502 (hereinafter referred to as McKee) and Versini US Patent Application Publication No. 2010/0215808 A1 (hereinafter referred to as Versini).
Regarding claims 36-44, 47 and 50-53, Grykiewicz teaches that loose ground coffee is compressed to make a compacted pellet (e.g., tablets or wafers of compressed coffee) for easy handling and storage (column 1, line 41-46). Coffee is known to contain at least one polysaccharide (see instant specification page 3, line 4-6).
Grykiewicz is silent regarding that the compacted pellet is directly coated with cross-linked polysaccharide such as cross-linked alginate to obtain a capsule in which the cross-linking agent is an alkaline earth metal, and that the cross-linking comprises contacting the compacted pellet with a solution or a dispersion of the alginate polysaccharide, removing the compacted pellet from the solution or dispersion followed by contacting the compacted pellet with the cross-linking agent (or contacting the compacted pellet with the cross-linking agent followed by removing the compacted pellet from the solution or dispersion), and drying of the compacted pellet. Grykiewicz is further silent regarding the capsule being spherical in shape.
Robinson teaches that encapsulating/encasing a food product such as coffee could reduce the reactivity of the product with regard to oxygen and water and so as to extend the shelf life of the product ([0040-0041]).
Girard teaches a process of coating a solid food product (for example, fresh fruits, fresh vegetables, or dried fruits, 0059; 0081) with a cross-linked polysaccharide for extending the shelf-life of the solid food product, wherein the process comprising dipping (e.g., immersing) the solid food product in an aqueous solution of 0.1-8 wt% (or narrowly 0.5-4%, 0025; 0089) sodium alginate or spraying the sodium alginate solution on the solid food product such that alginate substantially covers the solid food product (0035-0036; 0024-0025); immersing the solid food product in a cross-linking agent solution (e.g., calcium-containing aqueous solution, for example, 0.5-35% calcium ascorbate, 0028; 0091) to obtain a capsule (e.g., cross-linked alginate layer that is substantially covers the solid food product (0024-0025; 0028); and drying the coated solid food product (0024; 0040; 0066). Necessarily, a step of removing the food product from the solution of the alginate is taught by Girard since the step of contacting the food product with alginate and the step of contacting the food product with the cross-linking agent are two separate steps. Inherently, calcium forms a bond with alginate in which the former is the election pair acceptor and the latter is the election pair donor.
McKee teaches a method of coating a food product (e.g., meat, vegetable, poultry, seafood, pizza, burritos, tortillas, etc., column 8, line 3-5) with cross-linked (e.g., gelled) alginate, the method comprising contacting the food product with alginate solution followed by contacting the food product with a gelling mixture comprising calcium ion as a gelling agent (claim 1; column 4, line 9-11; column 3, line 23); McKee further teaches that the coating or the film formed on the food product is able to form an oxygen barrier for retarding oxidation of the food product and a moisture barrier for retarding migration of moisture (Abstract; column 2, line 37-41).
Versini teaches holding a compacted coffee product in a spherical-shaped capsule that is impermeable to air and water so that the infusion can be carried out in the interior (0030; 0015; Fig. 1); Versini further teaches that the spherical shape allows the capsule to be pierced on substantially any position on its surface, irrespective of the position of the latter relative to the piercing and infusion device (0016; 0011; Fig. 1).
Grykiewicz, Robinson and Versini are all directed to coffee products, and where Robinson or Versini teaches encapsulating a coffee product for reducing the reactivity of the product with regard to oxygen/air and water and extending the shelf life of the product, Girard and/or McKee describe the way to practice this encapsulation which serves to protect a food product from oxygen and water, and to extend the shelf life of the food product; further Versini teaches the advantage of a spherical shape when the capsule is used in an infusion device. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Grykiewicz by treating the compacted pellet of coffee directly with an aqueous solution of sodium alginate, applying calcium-containing liquid solution to form the cross-linked alginate (e.g., calcium alginate) that encapsulates the compressed coffee powder, and drying the obtained product. Doing so would have protected the coffee product from oxygen and extended the shelf life of the product. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have made a spherical shaped capsule such that the capsule can be pierced on substantially any position on its surface, irrespective of the position of the latter relative to the piercing and infusion device. Calcium alginate is known to be water insoluble.
Regarding the limitation about “single serving”, Grykiewicz teaches tablets or wafers of compressed coffee ground contain a pre-measured quantity (column 1, line 45-47), therefore, one of ordinary skilled in the art would have been motivated to manipulate the size of the tablets or wafers depending on the amount of serving needed. Further, attention is drawn to MPEP 2144.04 IV. A., which states that change in size is prima facie obvious.
Further, Versini teaches that the volume of the capsule depends on the (infusion) machine, and capsule can include of 5-15 g of coffee (0030; 0033), which appears to meet a single serving. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Grykiewicz by making a compacted coffee pellet having 5-15 gram coffee for a coffee infusion machine.
Further regarding the limitation about the capsule being spherical in shape, attention is drawn to MPEP 2144.04 IV. B. which states that changes in shape is prima facie obvious absent a showing of the new result.
The language about “for extracting a beverage” is not considered to further limit the method since it is about the intended use of the capsule that contains the beverage powder. Given that Grykiewicz in view of Robinson, Girard, McKee and Versini arrives at the method of claim 36 and the capsule that contains the beverage powder of claim 36, it logically follower that the coffee powder-containing capsule as disclosed by prior art would be capable of performing the intended uses, i.e., for extracting a beverage.
Further regarding claim 38, it is noted that the claim differs from the prior art in that where prior art teaches cross-linking the polysaccharide coating in the solution of cross-linking agent after the compacted pellet is removed from the polysaccharide solution, claim 38 teaches a different order that cross-linking of the polysaccharide with the cross-linking agent takes places in the solution the polysaccharide followed by removing the compacted pellet from the polysaccharide solution. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (See MPEP 2144.04 IV). In the instant case, it does not appear that the step of cross-linking the alginate with calcium cation in the alginate solution before removing the compacted pellet from the alginate solution results in a different product from the step of removing the compacted pellet from alginate solution followed by cross-linking the coating in the cross-linking agent solution, given that either process will result in a capsule with cross-linked coating (e.g., calcium alginate).
Regarding claims 45 and 48, Girard as recited above teaches 0.5-35% calcium ascorbate solution (0028), which encompasses the ranges as recited in claims 45 and 48. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 46 and 49, Girard teaches that the preferred calcium-containing cross-linking agent is calcium ascorbate and the amount of which is 0.5-35% (0028); additionally, Girard includes a less preferred calcium-containing cross-linking agent calcium chloride (0065). Further, McKee teaches that calcium chloride and calcium lactate are suitable cross-linking agents (e.g., gelling materials) (column 3, line 23-24). Given that the molecular mass of calcium chloride is less than that of calcium ascorbate (e.g., the MW of calcium chloride is 110 g/mol and the MW of calcium ascorbate is 390 g/mol) and the amount of calcium ion in the solution matters in the action of cross-linking, it logically follows that if calcium chloride is used instead of calcium ascorbate, the amount of calcium chloride is within or overlaps with the range of 0.5-35%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 54-55, wherein prior art teaches encapsulating the compacted coffee pellet with a coating formed of cross-linked alginate so as to protect the coffee product from oxygen and water and extended the shelf life of the product, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have dipping the pellet fully into the solution of alginate or spraying the pellet fully with the solution of alginate such that a full capsule is formed for the protection. Further, Girard taches coating the food product with a polysaccharide to substantially cover the food product (0024), and even a complete coverage (0095).
Claims 36-55 are rejected under 35 U.S.C. 103 as being unpatentable over Colston US Patent Application Publication No. 2004/0025701A1 (hereinafter referred to as Colston) in view of Girard US Patent Application Publication No. 2013/0029012 A1 (hereinafter referred to as Girard), Earle and McKee US Patent No. 4,504,502 (hereinafter referred to as McKee) and Versini US Patent Application Publication No. 2010/0215808 A1 (hereinafter referred to as Versini).
Regarding claims 36-44, 47 and 50-53, Colston teaches a capsule that contains a portion of compacted ground coffee pellet, wherein the capsule is formed from air- and moisture-impermeable material (0006). Colston teaches that the capsule is for brewing coffee (0006), thus reading on the limitation about for extracting a beverage. Coffee is known to contain at least one polysaccharide (see instant specification page 3, line 4-6).
Colston teaches that the capsule is formed from air- and moisture-impermeable material, but is silent regarding the capsule is a coating formed directly on the compacted coffee pellet from cross-linked polysaccharide such as cross-linked alginate in which the cross-linking agent is an alkaline earth metal, and that the cross-linking comprises contacting the compacted pellet with a solution or a dispersion of the alginate polysaccharide, removing the compacted pellet from the solution or dispersion followed by contacting the compacted pellet with the cross-linking agent (or contacting the compacted pellet with the cross-linking agent followed by removing the compacted pellet from the solution or dispersion), and drying of the compacted pellet.
Girard teaches a process of coating a solid food product (for example, fresh fruits, fresh vegetables, or dried fruits, 0059; 0081) with a cross-linked polysaccharide for extending the shelf-life of the solid food product, wherein the process comprising dipping (e.g., immersing) the solid food product in an aqueous solution of 0.1-8 wt% (or narrowly 0.5-4%, 0025; 0089) sodium alginate or spraying the sodium alginate solution on the solid food product such that alginate substantially covers the solid food product (0035-0036; 0024-0025); immersing the solid food product in a cross-linking agent solution (e.g., calcium-containing aqueous solution, for example, 0.5-35% calcium ascorbate, 0028; 0091) to obtain a capsule (e.g., cross-linked alginate layer that is substantially covers the solid food product (0024-0025; 0028); and drying the coated solid food product (0024; 0040; 0066). Necessarily, a step of removing the food product from the solution of the alginate is taught by Girard since the step of contacting the food product with alginate and the step of contacting the food product with the cross-linking agent are two separate steps. Inherently, calcium forms a bond with alginate in which the former is the election pair acceptor and the latter is the election pair donor.
McKee teaches a method of coating a food product (e.g., meat, vegetable, poultry, seafood, pizza, burritos, tortillas, etc., column 8, line 3-5) with cross-linked (e.g., gelled) alginate, the method comprising contacting the food product with alginate solution followed by contacting the food product with a gelling mixture comprising calcium ion as a gelling agent (claim 1; column 4, line 9-11; column 3, line 23); McKee further teaches that the coating or the film formed on the food product is able to form an oxygen barrier for retarding oxidation of the food product and a moisture barrier for retarding migration of moisture (Abstract; column 2, line 37-41).
Colston, Girard and McKee are all directed to the encapsulation of a food material, and where Colston teaches that a capsule for coffee ground is formed from air- and moisture-impermeable material, McKee teaches that cross-linked (e.g., gelled) alginate could be used to coat a food wherein the coating is able to form an air- and moisture-impermeable barrier. Further, Girard shows the details of forming such a coating on a food.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Colston by replacing the air and water- impermeable materials of Colston by cross-linked alginate (e.g., calcium alginate) through treating the compacted beverage powder pellet with an aqueous solution of sodium alginate, applying calcium-containing liquid solution to form the cross-linked alginate (e.g., calcium alginate) that encapsulates the compressed beverage powder pellet, and drying the obtained product. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that cross-linked alginate (e.g., calcium alginate) forms air and water- impermeable film, and is suitable for coating a food.
Colston teaches that the capsule is in frustoconical or oblate spheroid shape (0006) thus being silent regarding that the capsule is spherical. However, MPEP 2144.04 IV. B. states that changes in shape is prima facie obvious absent a showing of the new result.
Regardless, Versini in the same field of endeavor teaches holding a compacted coffee product in a spherical-shaped capsule that is impermeable to air and water so that the infusion can be carried out in the interior (0030; 0015; Fig. 1); Versini further teaches that the spherical shape allows the capsule to be pierced on substantially any position on its surface, irrespective of the position of the latter relative to the piercing and infusion device (0016; 0011; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Colston by making spherical shaped capsule such that the capsule can be pierced on substantially any position on its surface, irrespective of the position of the latter relative to the piercing and infusion device.
Regarding the limitation about “single serving”, Colston teaches a portion of ground coffee (0006), and Versini teaches that the volume of the capsule depends on the (infusion) machine, and capsule can include of 5-15 g of coffee (0030; 0033), which appears to meet a single serving. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Colston by making a compacted coffee pellet having 5-15 gram coffee for a coffee infusion machine. Further, attention is drawn to MPEP 2144.04 IV. A, which states that change in size is prima facie obvious.
Further regarding claim 38, it is noted that the claim differs from the prior art in that where prior art teaches cross-linking the polysaccharide coating in the solution of cross-linking agent after the compacted pellet is removed from the polysaccharide solution, claim 38 teaches a different order that cross-linking of the polysaccharide with the cross-linking agent takes places in the solution the polysaccharide followed by removing the compacted pellet from the polysaccharide solution. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (See MPEP 2144.04 IV). In the instant case, it does not appear that the step of cross-linking the alginate with calcium cation in the alginate solution before removing the compacted pellet from the alginate solution results in a different product from the step of removing the compacted pellet from alginate solution followed by cross-linking the coating in the cross-linking agent solution, given that either process will result in a capsule with cross-linked coating (e.g., calcium alginate).
Regarding claims 45 and 48, Girard as recited above teaches 0.5-35% calcium ascorbate solution (0028), which encompasses the ranges as recited in claims 45 and 48. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 46 and 49, Girard teaches that the preferred calcium-containing cross-linking agent is calcium ascorbate and the amount of which is 0.5-35% (0028); additionally, Girard includes a less preferred calcium-containing cross-linking agent calcium chloride (0065). Further, McKee teaches that calcium chloride and calcium lactate are suitable cross-linking agents (e.g., gelling materials) (column 3, line 23-24). Given that the molecular mass of calcium chloride is less than that of calcium ascorbate (e.g., the MW of calcium chloride is 110 g/mol and the MW of calcium ascorbate is 390 g/mol) and the amount of calcium ion in the solution matters in the action of cross-linking, it logically follows that if calcium chloride is used instead of calcium ascorbate, the amount of calcium chloride is within or overlaps with the range of 0.5-35%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 54-55, wherein prior art teaches encapsulating the compacted coffee pellet with a coating formed of cross-linked alginate so as to protect the coffee product from oxygen and moisture, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have dipping the pellet fully into the solution of alginate or spraying the pellet fully with the solution of alginate such that a full capsule is formed for the protection. Further, Girard taches coating the food product with a polysaccharide to substantially cover the food product (0024), and even a complete coverage (0095).
Claims 36-55 are rejected under 35 U.S.C. 103 as being unpatentable over Versini US Patent Application Publication No. 2010/0215808 A1 (hereinafter referred to as Versini) in view of Girard US Patent Application Publication No. 2013/0029012 A1 (hereinafter referred to as Girard), and Earle and McKee US Patent No. 4,504,502 (hereinafter referred to as McKee).
Regarding claims 36-44, 47 and 50-53, Versini teaches a compacted beverage powder (e.g., coffee, tea, milk or chocolate powder, etc.) in a spherical-shaped capsule which is a packaging envelope that is impermeable to air and water so that the extraction (e.g., infusion) of the beverage can be carried out in the interior (0030; 0015; Fig. 1). Further, Versini teaches that the volume of the capsule depends on the (infusion) machine, and capsules can include of 5-15 g of coffee (0030; 0033), thus encompassing the embodiment of a capsule for a single serving. Coffee, tea, milk or chocolate is known to contain at least one polysaccharide.
Versini teaches that the capsule is a packaging envelope formed from an air- and moisture-impermeable material such as aluminum and other air- and water- impermeable materials can be used such as polypropylene, PVC, PE, etc. (0036). Versini is silent regarding the capsule is a coating formed from cross-linked polysaccharide such as cross-linked alginate in which the cross-linking agent is an alkaline earth metal, and that the coating and cross-linking comprise contacting the compacted pellet with a solution or a dispersion of the alginate polysaccharide, removing the compacted pellet from the solution or dispersion followed by contacting the compacted pellet with the cross-linking agent (or contacting the compacted pellet with the cross-slinking agent followed by removing the compacted pellet from the solution or dispersion), and drying of the compacted pellet.
Girard teaches a process of coating a solid food product (for example, fresh fruits, fresh vegetables, or dried fruits, 0059; 0081) with a cross-linked polysaccharide for extending the shelf-life of the solid food product, wherein the process comprising dipping (e.g., immersing) the solid food product in an aqueous solution of 0.1-8 wt% (or narrowly 0.5-4%, 0025; 0089) sodium alginate or spraying the sodium alginate solution on the solid food product such that alginate substantially covers the solid food product (0035-0036; 0024-0025); immersing the solid food product in a cross-linking agent solution (e.g., calcium-containing aqueous solution, for example, 0.5-35% calcium ascorbate, 0028; 0091) to obtain a capsule (e.g., cross-linked alginate layer that is substantially covers the solid food product (0024-0025; 0028); and drying the coated solid food product (0024; 0040; 0066). Necessarily, a step of removing the food product from the solution of the alginate is taught by Girard since the step of contacting the food product with the alginate and the step of contacting the food product with the cross-linking agent are two separate steps. Inherently, calcium forms a bond with alginate in which the former is the election pair acceptor and the latter is the election pair donor.
McKee teaches a method of coating a food product (e.g., meat, vegetable, poultry, seafood, pizza, burritos, tortillas, etc., column 8, line 3-5) with cross-linked (e.g., gelled) alginate, the method comprising contacting the food product with alginate solution followed by contacting the food product with a gelling mixture comprising calcium ion as a gelling agent (claim 1; column 4, line 9-11; column 3, line 23); McKee further teaches that the coating or the film formed on the food product is able to form an oxygen barrier for retarding oxidation of the food product and a moisture barrier for retarding migration of moisture (Abstract; column 2, line 37-41).
Versini, Girard and McKee are all directed to the encapsulation of a food material, and where Versini teaches that a capsule for beverage ground is formed from air- and moisture-impermeable material, McKee teaches that cross-linked (e.g., gelled) alginate could be used to coat a food wherein the coating is able to form an air- and moisture-impermeable barrier. Further, Girard shows the details of forming such a coating on a food.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Versini by replacing the air and water- impermeable materials of Versini by cross-linked alginate (e.g., calcium alginate) through treating the compacted beverage powder pellet with an aqueous solution of sodium alginate, applying calcium-containing liquid solution to form the cross-linked alginate (e.g., calcium alginate) that encapsulates the compressed beverage powder pellet, and drying the obtained product. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that cross-linked alginate (e.g., calcium alginate) forms air and water- impermeable film, and is suitable for coating a food.
Regarding the limitation that the coating is directly applied on the compacted pellet of beverage powder, Versini teaches a filtering envelope between the beverage powder and the packaging envelope, however, such a filtering envelope appears to be optional (0030, the presence of the filtering envelope 3 is not essential to the operation of the capsule; see also claim 1, which suggests that the filtering envelope is not a mandatory part). Therefore, Versini as modified by Girard and McKee meets the limitation that the cross-linked coating is directed applied on the compacted pellet.
Further regarding claim 38, it is noted that the claim differs from the prior art in that where prior art teaches cross-linking the polysaccharide coating in the solution of cross-linking agent after the compacted pellet is removed from the polysaccharide solution, claim 38 teaches a different order that cross-linking of the polysaccharide with the cross-linking agent takes places in the solution the polysaccharide followed by removing the compacted pellet from the polysaccharide solution. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (See MPEP 2144.04 IV). In the instant case, it does not appear that the step of cross-linking the alginate with calcium cation in the alginate solution before removing the compacted pellet from the alginate solution results in a different product from the step of removing the compacted pellet from alginate solution followed by cross-linking the coating in the cross-linking agent solution, given that either process will result in a capsule with cross-linked coating (e.g., calcium alginate).
Regarding claims 45 and 48, Girard as recited above teaches 0.5-35% calcium ascorbate solution (0028), which encompasses the ranges as recited in claims 45 and 48. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 46 and 49, Girard teaches that the preferred calcium-containing cross-linking agent is calcium ascorbate and the amount of which is 0.5-35% (0028); additionally, Girard includes a less preferred calcium-containing cross-linking agent calcium chloride (0065). Further, McKee teaches that calcium chloride and calcium lactate are suitable cross-linking agents (e.g., gelling materials) (column 3, line 23-24). Given that the molecular mass of calcium chloride is less than that of calcium ascorbate (e.g., the MW of calcium chloride is 110 g/mol and the MW of calcium ascorbate is 390 g/mol) and the amount of calcium ion in the solution matters in the action of cross-linking, it logically follows that if calcium chloride is used instead of calcium ascorbate, the amount of calcium chloride is within or overlaps with the range of 0.5-35%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 54-55, wherein prior art teaches encapsulating the compacted coffee pellet with a coating formed of cross-linked alginate so as to protect the coffee product from air and moisture, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have dipping the pellet fully into the solution of alginate or spraying the pellet fully with the solution of alginate such that a full capsule is formed for the protection. Further, Girard teaches coating the food product with a polysaccharide to substantially cover the food product (0024), and even a complete coverage (0095).
Response to Argument
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Regarding the limitation that the capsule is for “single serving”, applicant argues on page 8 of the Remarks that the skilled person understands that a portion-by-portion preparation of coffee using a capsule corresponds to a single serving, as supported by google search.
The examiner disagrees. There is no record showing that the “portion” as in “portion-by-portion” recited in the instant specification is equal to single serving, especially given that the latter appears to regulate the size of the beverage powder but the former does not. Further, applicant is reminded that claim 36 does not recite coffee, rather, the claim broadly recites a beverage powder.
Applicant argues on pages 8 and 10 of the Remarks that the tablets or the wafers of Grykiewicz contain 30-80 gram of coffee thus failing to meet the limitation about single serving (applicant even asserts that Grykiewicz teaches away from the single serving) .
The examiner disagrees. The tablets that have 30-80 gram of coffee is not what the rejection relies upon. Rather the rejection relies upon the background part of Grykiewicz which teaches that it is known to compress loose ground coffee to make a compacted pellet (e.g., tablets or wafters of compressed coffee) for easy handling and storage (column 1, line 41-46). Additionally, Grykiewicz teaches that tablets or wafers of compressed coffee ground contain a pre-measured quantity (column 1, line 45-47), therefore, one of ordinary skilled in the art would have been motivated to manipulate the size of the tablets or wafers depending on the amount of serving needed. Further, attention is drawn to MPEP 2144.04 IV. A, which states that change in size is prima facie obvious.
Further, Versini teaches that the volume of the capsule depends on the (infusion) machine, and capsule can include of 5-15 g of coffee (0030; 0033), which appears to meet a single serving. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Grykiewicz by making a compacted coffee pellet having 5-15 gram coffee for a coffee infusion machine.
On the other hand, the examiner notes that the limitation about “single serving” is not sufficiently supported by the disclosure as originally filed. See the 35 USC 112(a) rejection above.
Applicant argues on page 9 of the Remarks that the wafer of Grykiewicz is wrapped in filter paper, thus failing to teach that limitation that the coating is directly applied on the pellet.
The argument is considered but found unpersuasive. The wafer that is wrapped with filter paper is not what the rejection relies upon. Rather the rejection relies upon the background part of Grykiewicz which teaches that it is known to compress loose ground coffee to make a compacted pellet (e.g., tablet or wafter of compressed coffee) for easy handling and storage (column 1, line 41-46).
Even if, in arguendo, that the wafter wrapped with filter paper is what the rejection relies upon, the examiner submits that one of ordinary skill in the art would have chosen to dip the pellet as opposed to the filter paper-wrapped pellet in the polysaccharide solution or dispersion to form the coating because the skilled person would have known that filter papers will absorb water in the polysaccharide solution or dispersion, which is undesirable.
Applicant argues on page 9 of the Remarks that Robinson teaches a dissolvable coating of a pulverized, final product thus the skilled artisan has no incentive to consider Robinson, Girard and Earle.
The argument is considered but found unpersuasive. The dissolvable coating of a pulverized, final product as disclosed by Robinson, wherever it is in Robinson, is not relied upon by the rejection, rather, the rejection relied upon the teaching of Robinson in para. 0040-0041 that encapsulating/encasing a food product such as coffee could reduce the reactivity of the product with regard to oxygen and water and so as to extend the shelf life of the product.
The examiner notes that rest of the arguments made in the Remarks are presented earlier to which the examiner has responded. See para. 30-41 of the office action issued 07/31/2025.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791